The Madrid Protocol - International Registration of Marks

From 10 December 2012, New Zealand businesses will be able to take advantage of New Zealand’s accession to the Madrid Protocol. The Madrid Protocol allows New Zealand and foreign businesses to protect their trade marks in countries that are parties to the Protocol (“Contracting Parties”). A full list of the Contracting Parties is available here.

This article will address questions likely to be asked by New Zealand businesses. The information in this article is of a general nature. Please contact us if you have any queries, and for advice regarding individual businesses.

What is the Madrid Protocol?

The Madrid Protocol provides for a system where a person or business can seek protection of its trade marks in any number of Contracting Parties, by filling out a single application and paying the appropriate fees,[1] rather than filing multiple applications in individual countries. The Madrid Protocol is administered by the World Intellectual Property Organization (“WIPO”), which is based in Geneva, Switzerland. Important Contracting Parties for New Zealand businesses to consider are Australia, Singapore, the United States, China, Japan, the European Union, and the United Kingdom.

This system works both ways, allowing New Zealand businesses to seek protection for their trade marks in other countries, and allowing foreign businesses to seek protection for their trade marks in New Zealand.

How does a New Zealand business make a Madrid Protocol application?

A Madrid Protocol application must be based on a trade mark application or registration in a Contracting Party (“the Basic application or registration”). If the Basic application or registration was made or granted in New Zealand, the “Office of Origin” is New Zealand.

The applicant must be from, domiciled in, or have a real business presence in New Zealand.

The process is as follows:

1) A Madrid Protocol application is filed at the Intellectual Property Office of New Zealand (“IPONZ”). The application must:

identify the Basic application or registration that the Madrid Protocol application will be based on;

identify the goods and services the application will cover; and

designate the countries in which the applicant wishes to seek protection of its trade mark (“the Designated countries”).

2) The applicant pays the appropriate fee.

3) IPONZ certifies that the Madrid Protocol application:

is for the same trade mark as that of the Basic application or registration (including, for example, any colour limitations or explanations of the trade mark); and

is for goods and services that are the same as, or narrower in scope than, goods and services contained in the Basic application or registration; and

is owned by the same entity as the Basic application or registration.

4) IPONZ sends the application to WIPO.

5) WIPO performs a formalities-examination of the application, which includes an examination that:

the specification of goods and services is comprehensible;

the goods and services specified have been classified according to the latest edition of the Nice Classification; and

the appropriate fees have been paid.

6) Once WIPO has determined that the formalities of the application are in order, the application becomes an “International Registration”. An International Registration does not afford the owner any protection for the trade mark. Rather, the trade mark is merely registered with WIPO as an application that will be sent to the designated countries. WIPO notifies each country designated in the application form, who will then determine whether, and to what extent, the trade mark will be protected in that country.

7) Each Designated country examines the International Registration to determine whether it will extend protection of the trade mark to its jurisdiction, under its domestic laws.

The possible outcomes for the application in each Designated country are:

protection of the trade mark is extended to the Designated country, for all goods and services specified in the application;

protection of the trade mark is extended to the Designated country, but only for some of the goods and services specified in the application;

the Designated country refuses to extend protection of the trade mark to its country;

a “provisional refusal of protection” is issued by the Designated country – allowing the applicant to make submissions that protection of its trade mark should be extended to the Designated country;

the Designated country takes no action for 18 months, which results in the automatic protection of the trade mark in that country.

What is the priority date of an International Registration?

The priority date of an International Registration depends on a range of factors. Scenarios include:

1) if a Madrid Protocol application is filed with IPONZ, and certified and sent to WIPO within two months of the application date, the priority date will be the date that the Madrid Protocol application was filed with IPONZ;

2) if a Madrid Protocol application is filed with IPONZ, and certified and sent to WIPO more than two months after the application date, the priority date will be the date that the Madrid Protocol application was received at WIPO;

3) if a Madrid Protocol application claiming priority under the Paris Convention (“Convention Priority”) based on an earlier-filed trade mark application in another jurisdiction is filed with IPONZ, and IPONZ certifies and sends it to WIPO within two months of the application date, the application will maintain its Convention Priority date (even if WIPO receives the application more than six months after the Convention Priority date);

4) if a Madrid Protocol application claiming Convention Priority is filed with IPONZ, and IPONZ certifies and sends it to WIPO two months after the application date, and six months after the Convention Priority date, the priority date will be the date that the Madrid Protocol application was received at WIPO;

5) if the owner of a Madrid Protocol application makes subsequent designations (that is, adds further countries to the Madrid Protocol application at a later stage), the priority date is the date that WIPO receives the application to make further designations.

Advantages of using the Madrid Protocol

There are several advantages in using the Madrid Protocol to seek protection of a trade mark in other jurisdictions: certainty as to time frame; administrative tasks are centralised, and potential cost savings.

A Designated country must decide, within 18 months of receiving a Madrid Protocol application (based on an International Registration), whether, and to what extent, it will extend protection of the trade mark to its country. This provides certainty to the applicant that a decision will be made within 18 months (unless the trade mark is opposed by a third party).

Administrative tasks for Madrid Protocol applications and registrations[2] can be completed through WIPO, rather than through the Trade Marks Office of each relevant country.

However, it will still be necessary for an applicant to instruct an attorney to overcome objections that the Madrid Protocol application may face in different jurisdictions.

Disadvantages of using the Madrid Protocol

A major disadvantage in using the Madrid Protocol to seek protection of a trade mark in multiple jurisdictions is the five year dependency-period on the Basic application or registration. That is, for the first five years from the date of International Registration, any changes made to the Basic application or registration will also be made to each corresponding application/registration in a Designated country. This means that cancellation or limitation of the Basic application or registration will result in the same cancellation or limitation of every designation. A third party attack on the Basic application or registration during this five-year dependency-period is known as a “Central Attack”.

For this reason, using the Madrid Protocol may not be the most effective or risk-averse way of securing protection for a trade mark in multiple jurisdictions. It is more appropriate to use the Madrid Protocol to protect “strong” trade marks, as “weak” trade marks are more susceptible to a Central Attack.

If you have any questions about filing strategies, or trade mark protection in New Zealand or abroad, please contact us.

[1] Some Contracting Parties have additional requirements, notably the United States (which requires a signed Declaration of Intention to Use the Mark), the European Union (which requires two versions of the application to be filed, the second being in French, German, Italian, or Spanish) and Singapore, Ireland, and the United Kingdom (which require the applicant to declare that they have an intention to use the trade mark in that country for the goods or services specified in the application).

[2] For instance, the payment of renewal fees, assignment of trade marks, and changes in the applicant’s name or address.